Scott Daniels | August 31, 2011
Oracle is likely to get a shot in the arm in its pending action in the Northern District of California, where it accuses Google of infringing seven patents and a series of copyrights related to the Java platform. Google replied to that infringement action by, inter alia, initiating reexamination of the seven patents. But it now appears that the validity of Oracle’s U.S. Patent 6,061,520 is headed to confirmation.
The PTO has already indicated that claims 1-4, 8, 10, 12-17, 20 and 22 of the ‘520 patent are valid over the prior art; claims 6-7, 9, 11, 18-19, 21 and 23 were rejected, and claim 5 was not subjected to reexamination. Earlier this month, lawyers for Oracle interviewed the examiners with the goal of persuading them to withdraw the prior art rejection, but no agreement was reached. Last Tuesday, Oracle filed an Amendment continuing to assert the validity of the rejected claims, but nonetheless canceling those claims. This cancelation of the rejected claims means that the PTO will now issue a reexamination certificate confirming the validity of the remaining claims.
The reexamination certificate is unlikely to issue before the October 31st start of the Oracle’s trial against Google. Still, the cloud of reexamination has been removed from one of Oracle’s seven patents, which will now enjoy “an enhanced presumption of validity” in that litigation. This successful conclusion of the reexamination of one of the seven Oracle patents also reduces the likelihood of the trial judge staying the case pending completion of the reexamination proceedings.
Two footnotes. Google filed a second reexamination request against the ‘520 patent – 90/011,647 – which the PTO denied for failing to raise a substantial new question of patentability. Also, critics of the speed of the reexamination process should note that the soon-to-conclude ‘520 reexamination began in February.